WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TrustMark (2005) Limited v. Kevin Arrowsmith
Case No. D2012-1016
1. The Parties
The Complainant is TrustMark (2005) Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is Kevin Arrowsmith of Hampshire, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <trustmark.biz> is registered with Register.IT SPA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2012. On May 14 and 23, 2012, the Center transmitted by email to Register.IT SPA a request for registrar verification in connection with the disputed domain name. On May 15 and 24, 2012, Register.IT SPA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Restrictions Dispute Resolution Policy (the “RDRP”), the Supplemental Rules for Restrictions Dispute Resolution Policy (the “Supplemental RDRP Rules”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “UDRP Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
In accordance with the UDRP Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2012. In accordance with the UDRP Rules, paragraph 5(a), the due date for Response was June 24, 2012. Two email communications from the Respondent were received by the Center on June 19, 2012, and one email communication from the Respondent was received by the Center on June 20, 2012. The Response was filed with the Center on June 21, 2012.
The Center appointed David Perkins as the sole panelist in this matter on June 28, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the UDRP Rules, paragraph 7.
4. Factual Background
4.A.1 The Complainant is a not-for-profit limited company incorporated in England and Wales in 2005. It operates under license from the United Kingdom Government’s Secretary of State for Business, Innovation and Skills (formally, The Secretary of State for Trade & Industry), hereinafter “The Secretary of State”. That license is dated 2005 (“the Master License”).
4.A.2 The Complainant operates a government sponsored scheme to enforce and maintain standards within the building industry and related trades. The Complainant assists consumers to find reputable firms across a wide range of trades to carry out repair, maintenance and improvement work.
The TRUSTMARK trademark and website
4.A.3 The Secretary of State is the proprietor of United Kingdom registered trade mark no 2,391,436 (Classes 37, 40 and 44) applied for in May 2005 and registered in July 2007. That trademark is a figurative mark “TRUST MARK Government Endorsed Standards”.
4.A.4 The Master License grants the Complainant a non-exclusive license to use that registered trade mark in relation to the TM System. That System is defined as
“a scheme to encourage the adoption of agreed minimum service standards for firms in the domestic building services sector, and implement them by approving compliant quality schemes run by any suitable industry organisation for their members.”
4.A.5 In operating that System the Complainant is obliged to maintain a website “www.trustmark.org.uk” which provides a database of approved tradesmen which can be searched by a web user. The website also provides further information about the Complainant and advice to end users.
4.A.6 The Master Licence further obliges the Complainant to enforce the trademark by taking
“... all necessary action (including, litigation, arbitration or compromise) in respect of any infringement or alleged infringement of the Trade Marks or passing off or any other claim or counterclaim brought or threatened in respect of the use of the Trade Marks”.
Complainant’s use of and rights in the unregistered term TRUST MARK
4.A.7 The Complainant also asserts unregistered rights in the term TRUST MARK by virtue of its operation under and by reference to that term for the past 7 years. The Complainant says that it has been well known under the term “Trust Mark” throughout that period. To demonstrate this assertion exhibited to the Complainant are the following articles:
“Scheme to battle rogue tradesman” BBC website January 30, 2006;
“Botched jobs pose risk to homes” BBC website October 25, 2006;
“Cowboy builders cost millions” BBC website February 6, 2007; and
“Tricks of the trade” Guardian newspaper January 27, 2007.
All of these articles show the term TRUST MARK being used in a manner which is exclusively referable to the Complainant.
4.B.1 The Respondent is the registrant of the disputed domain name <trustmark.biz> which was registered on February 24, 2009.
4.B.2 The Respondent asserts that he has “... suffered at the hands of the Trustmark scheme”. It appears from the Response that a complaint by the Respondent to the Parliamentary Ombudsman Service was resolved in favour of the Complainant.
4.B.3 The disputed domain name resolves to a website at which the Respondent recites a complaint that, notwithstanding using a building company accredited under the Trust Mark Scheme, that company not only failed to complete the building work on his house but also removed property without his consent from those premises. He describes the website as
“... dedicated to my struggle over the last 3 years to receive Justice...”.
The Respondent’s dispute with the Complainant
4.B.4 It appears that the Complainant and/or the National Inspection Council for Electrical Installation Contracting (NICEIC) investigated the Respondent’s complaint against the Trust Mark accredited building company. The Respondent asserts that the hearing of that investigation was “faked” by the Complainant “to protect their scheme operators”.
4.B.5 Exhibited to the Response are 5 communications spanning the period August 2009 to December 2011 between the Respondent, the Complainant and the Complainant’s solicitors. Those communications explain the dispute between the Respondent and the building company and also the Respondent’s complaint against the Complainant for, inter alia, allegedly failing to monitor its members properly. A letter from the Respondent to the Chairman of the Complainant states
“I was forced to undertake the expense and inconvenience of building a website in an attempt to force Trust Mark to follow their complaints procedures correctly in my case called www.trustmark.biz and exposing Trust Mark’s failings in not following their procedures correctly as my letters were being ignored by Trust Mark.”
Further details relating to the Respondent’s complaints against the Complainant are set out in these communications but it is not necessary, nor relevant for this administrative proceeding to recite them in this Decision.
5. Parties Contentions
5.A.1 Complainant asserts that it has rights both in the registered TRUST MARK trademark (identified in paragraph 4.A.3 above) and also in the unregistered term TRUST MARK (paragraph 4.A.7 above).
5.A.2 Complainant asserts that the disputed domain name is confusingly similar to the registered trademark, since the distinctive element of that registration is TRUST MARK and the words “Government Endorsed Standards” are merely descriptive of the services which it offers.
5.A.3 Complainant further asserts that the disputed domain name is identical to the unregistered term TRUST MARK.
5.A.4 Complainant’s case is that the Respondent uses the website to which the disputed domain name resolves to protest against its activities. As such the Complainant says the disputed domain name is being used exclusively for the expression of non-commercial ideas contrary to paragraph 4(c)(iii)(2) of the RDRP. That provision of the RDRP states that it is not a bona fide commercial use of a .biz domain name to use that name exclusively for non-commercial ideas, for example
“registering exclusively to criticize or otherwise express an opinion on the products or services of ABC Company, with no other intended business or commercial purpose”.
In that respect, the Complaint cites the Decision in Braunstone Community Association v. Alan Davie, WIPO Case No. D2005-1279.
4.A.5 Consequently, the Complainant requests transfer of the disputed domain name.
5.B.1 Respondent challenges Complainant’s claimed rights in the registered TRUST MARK trademark and in the unregistered term TRUST MARK. The grounds of that challenge are that Trustmark National Bank of Jackson, MS, United States of America registered the domain name <trustmark.com> in June 1998 which was well before the Complainant was incorporated in 2005 and the TRUST MARK registered United Kingdom trademark was applied for in May 2005.
5.B.2 Respondent also points to registration of <trustmark.org> by Doctors Choice Inc. in July 1998 and registration of <trustmark.co.uk> in September 1999 by Cyber Ware Limited, again both before the Complainant was incorporated in 2005.
5.B.3 Respondent’s case is that these prior domain name registrations invalidate the Complainant’s claimed rights in the registered TRUST MARK trademark and in the unregistered term TRUST MARK.
5.B.4 As to Complainant’s assertion that Respondent is in breach of the RDRP (paragraph 5.A.4 above), the Respondent asserts that the website to which the disputed domain name resolves is a business website and is for use as a business, not as a protest site. He says that it is through the disputed domain name that third parties are able to contact Ethical Alliance GB Ltd. The Respondent says that he owns that company, which he describes as “a consumer website business” which enables “... companies to contact me to form an alliance to give 100% protection to the consumer plus other products.”
5.B.5 The Respondent says that the “www.trustmark.biz” website to which the disputed domain name resolves “... is also registered to my other company A&S Signs & Graphics Ltd...”
6. Discussions and Findings
The TRUST MARK registered and unregistered marks
6.1 The Complainant establishes to the satisfaction of the Panel that the Complainant has rights in both the registered TRUST MARK United Kingdom trademark and the unregistered term TRUST MARK when that term is used in relation to the services offered by the Complainant.
6.2 Those rights are not invalidated by the prior registered domain names referred to in paragraphs 5.B.1 and 2 above.
6.3 The disputed domain name is identical with the unregistered term TRUST MARK. It is also confusingly similar to the registered United Kingdom trademark for the reason set out in paragraph 5.A.2 above.
Use of the disputed domain name contrary to paragraph 4(c)(iii)(2) RDRP
6.4 The extract from the Respondent’s “www.trustmark.biz” website exhibited to the Complaint is plainly a protest site. It contains no apparent reference to either of the Respondent’s companies, Ethical Alliance GB Ltd or A&S Signs & Graphics Ltd.
6.5 Nor does the Response exhibit any documentary evidence that the disputed domain name is used for business purposes by either of those companies or is otherwise being used primarily for a bona fide business or commercial purpose.
6.6 Further, the Respondent’s case that the disputed domain name is being used for such purpose is directly contrary to his statement in the letter to the Chairman of the Complainant, which is reproduced in paragraph 4.B.5 above. It is also contrary to his statement in the Response quoted in paragraph 4.B.3 above.
6.7 Consequently, on the evidence before the Panel, the inescapable conclusion is that the disputed domain name is being used exclusively for the purpose of criticizing the Complainant and the Panel so holds. That is not a bona fide business or commercial use as defined by the RDRP.
7.1 For the foregoing reasons, the Complaint succeeds. In making this finding, like the panelist in Braunstone Community Association v. Alan Davie, WIPO Case No. D2005-1279, this Panel stresses that the basis for the decision has nothing whatsoever to do with the Respondent’s criticisms of the Complainant. It is simply that “.biz” domain names are intended for business or commercial use, not the use which the Respondent is making of the disputed domain name.
7.2 Consequently, in accordance with paragraphs 4(i) of the RDRP and 15 of the UDRP Rules, the Panel orders that the disputed domain name <trustmark.biz> be transferred to the Complainant.
Dated: July 16, 2012